Priority Action

UNITED STATES PATENT AND TRADEMARK OFFICE

 

 

PRIORITY ACTION

 

OFFICE SEARCH:  The examining attorney has searched the Office records and has found no similar registered or pending mark which would bar registration under Trademark Act Section 2(d), 15 U.S.C. Section 1052(d).  TMEP section 704.02. 

 

TO AVOID ABANDONMENT, WE MUST RECEIVE A PROPER RESPONSE TO THIS OFFICE ACTION WITHIN 6 MONTHS OF OUR MAILING OR E-MAILING DATE.  This case will be given priority as an amended case if you respond to the requirements stated below within two months.

 

FOR INQUIRIES OR QUESTIONS ABOUT THIS OFFICE ACTION, PLEASE CONTACT THE ASSIGNED EXAMINING ATTORNEY.

 

Serial Number  76/537674  KYLIE

 

The following issues were discussed in communication with Mark Lebow on February 26, 2004.

 

Identification of Goods

The identification of goods is unacceptable as indefinite.  The applicant must amend the identification to specify the common commercial name of the goods.  If there is no common commercial name, the applicant must describe the product and its intended uses.  TMEP §1402.01.  Unacceptable language is indicated in bold strikethrough text.  Suggested language is indicated in bold underlined text. 

 

Applicant must amend the identification of goods and/or services in the application to correspond to the goods and/or services identified in the foreign certificate of registration by deleting the following:  “soaps, massage oils, aromatherapy oils, dentifrices, preparations for the teeth, depilatory preparations; pre-shave and aftershave preparations; shaving creams; deodorants; antiperspirants, shampoos, conditioners, serums, hair conditioning masks, hair sprays, hair gels, hair mousses, preparations, creams, lotions, sprays and mousses for tanning and/or for protection against the sun; after-sun lotions, creams and sprays, potpourri, bleaching preparations and other substances for laundry use, cleaning, polishing, scouring and abrasive preparations.”  The present identification of goods and/or services in the United States application is unacceptable because it exceeds the scope of the goods and/or services identified in the foreign certificate of registration.  In re Lowenbrau München, 175 USPQ 178 (TTAB 1972); 37 C.F.R. §2.32(a)(6); TMEP §§1012 and 1402.01(b).

 

The applicant may adopt the following identification of goods, if accurate:  “Cosmetics; eye make-up, eye shadows, eye powders, eye creams, mascaras, eye liners, eye pencils, eyebrow pencils, face make-up, foundations, concealers, powders, pressed powders, loose powders, blushers, bronzers; highlighters [applicant must further specify these goods], face glitter, make-up for lips, lip sticks, lip glosses, lip liners, lip balms; soaps [beyond the scope of the foreign registration]; perfumery, eau-de-cologne, toilet water, essential oils, massage oils [beyond the scope of the foreign registration], aromatherapy oils [beyond the scope of the foreign registration]; dentifrices [beyond the scope of the foreign registration]; preparations for the teeth [applicant must further specify these goods] [beyond the scope of the foreign registration]; depilatory preparations; pre-shave and aftershave preparations; shaving creams; deodorants; antiperspirants [beyond the scope of the foreign registration]; non-medicated toilet preparations [applicant must further specify these goods]; skin moisturizers, toners, and cleansers, makeup removers, face facial masks, face packs; preparations [applicant must further specify these goods], creams, lotions for the hair, face and skin; hair lotions; shampoos, conditioners, serums, hair conditioning masks, hair sprays, hair gels, hair mousses [beyond the scope of the foreign registration]; preparations, creams, lotions, sprays and mousses for tanning and/or for protection against the sun; after-sun lotions, creams and sprays [beyond the scope of the foreign registration]; cotton wool [applicant must further specify these goods]; non-medicated talcum powder; potpourri [beyond the scope of the foreign registration]; bleaching preparations and other substances for laundry use [“and other substances” is unacceptable as indefinite] [beyond the scope of the foreign registration]; general purpose cleaning, polishing, scouring and abrasive preparations liquids and powders [beyond the scope of the foreign registration],” in International Class 003.

 

Applicant may wish to consult the U. S. Patent and Trademark Office Goods and Services Manual, which can be found on our web site at www.uspto.gov.  Please note that, while an application may be amended to clarify or limit the identification, additions to the identification are not permitted.  37 C.F.R. §2.71(a); TMEP §1402.06.  Therefore, the applicant may not amend to include any goods or services that are not within the scope of the goods and services recited in the present identification.

 

Multiple Class Application Requirements

If applicant prosecutes this application as a combined, or multiple-class application, then applicant must comply with each of the following for those goods and/or services based on a foreign registration under Trademark Act Section 44(e):

 

(1)   Applicant must list the goods and/or services by international class with the classes listed in ascending numerical order.  TMEP § 1403.01; and

 

(2)   Applicant must submit a filing fee for each international class of goods and/or services not covered by the fee already paid.  37 C.F.R. §2.86(a)(2); TMEP §§810.01 and 1403.01.

 

Response

If the applicant has any questions or needs assistance in responding to this Office action, please telephone the assigned examining attorney.  If applicant should fail to respond to this Office action within the six month time limit, then the goods and/or services objected to will be deleted from the application.  The application will then proceed forward only for the goods/services with no objections. 

 

 

Jeffrey S. Molinoff

/Jeffrey Molinoff/

Law Office 103

703-308-9103 ext.247

703-746-8103 fax

ecom103@USPTO.gov

 

 

 

How to respond to this Office Action:

 

To respond formally using the Office’s Trademark Electronic Application System (TEAS), visit http://www.gov.uspto.report/teas/index.html and follow the instructions.

 

To respond formally via E-mail, visit http://www.gov.uspto.report/web/trademarks/tmelecresp.htm and follow the instructions.

 

To respond formally via regular mail, your response should be sent to the mailing Return Address listed above and include the serial number, law office and examining attorney’s name on the upper right corner of each page of your response.

 

To check the status of your application at any time, visit the Office’s Trademark Applications and Registrations Retrieval (TARR) system at http://tarr.gov.uspto.report/

 

For general and other useful information about trademarks, you are encouraged to visit the Office’s web site at http://www.gov.uspto.report/main/trademarks.htm